On 25th November 2003, The Times newspaper reported that an application may be made on behalf of Jonny Wilkinson to register as a trademark his distinctive ritual (fondly called the “Cradle”) before he takes a penalty kick. This distinctive ritual was made famous when he kicked the winning drop goal during the 2003 Rugby World Cup. This raises the question of the protection available for sporting rituals, in particular and movements, in general.
Images of people have been registered as trade marks for over 100 years. In 1897, a portrait of the mustachioed manufacturer of cough sweets was upheld as a registered trade mark [Rowland v Michell (1897) 14 RPC 37.]. Today there are a number of celebrities who have their photograph registered as trademarks: examples are the footballers Alan Shearer and Eric Cantona [Trade Mark No. 2117215 and Trade Mark No. 2120277 respectively.].
The registration of movements as trademarks is a more modern phenomenon. “Movement” marks are not common but are not unknown. Such a movement mark is usually the graphics of a moving logo. The Derbyshire Building Society has registered a mark that consists of a knowing tap on the side of the nose with an index finger [Trade Mark No. 2012603]. A BT logo with a red and a blue arc rotating around it was registered by British Telecoms [Trade Mark No. 2226440].
There is no reason in principle why movements or gestures distinctive of one person could not be registered as a trade mark provided the legal requirements are met. Moving images and movements are capable of registration if they can be represented graphically as a series of still images and if they are distinctive of a product or service. A detailed description of the movements and result of the gesture are required as are images of the stages of movement for the trade mark application.
Registration of human images as trade marks in the UK, whether as a still photograph or a part of a sequence of movements, have to overcome the requirement for distinctiveness. This can be difficult as far as the use of a celebrity’s image on memorabilia and merchandise is concerned. As Laddie J observed in the Elvis Presley Trade Marks case ([1999] RPC 567 (CA); [1997] RPC 543):
When a fan buys a poster or a cup bearing an image of his star, he is buying a likeness, not a product from a particular source. Similarly the purchaser of any one of the myriad of cheap souvenirs of the royal wedding bearing pictures of Prince Charles and Diana, Princess of Wales, wants mementoes with likenesses. He is likely to be indifferent as to the source. Of course it is possible that, as a result of the peculiarities of the way goods are marketed or advertised, an inference of association with a particular trader may be possible to draw. This may be the case when the proprietor’s products bear the word “Official”. But that does not mean that absent that word members of the public would draw any such inference.
In addition, the Intellectual Property Office of Singapore as a matter of practice requires the written consent of the person or (if deceased, the legal representative) whose image is being used.
Even if these hurdles can be overcome, registration of a sporting ritual would not give a monopoly right that would stop other people carrying out the same movements on the pitch. A trade mark application must identify the goods or services for which it is sought to register the mark. The protection is limited to use that interferes with the mark as an indicator of trade source. If Wilkinson’s “Cradle” ritual were to be registered for sporting articles and licenced to a particular sports manufacturer, another sports manufacturer using the ritual in their advertisement would infringe the mark. Another rugby player carrying out the ritual on the pitch would not be using the mark to indicate trade source and would not infringe.
Rituals distinctive of a particular sportsman may also be protected by the law of passing off. Passing off arises where one trader makes misrepresentations that damage the reputation of another. Use of a particular ritual that is associated with one sportsman may amount to a false suggestion of endorsement and be actionable.
Different considerations may apply to innovative sporting manoeuvres that improve existing techniques, such as the Fosbury Flop high-jump. In 1996, an article by American lawyers suggested that such moves should be patentable if they are non-obvious .[Robert M. Kunstadt, F. Scott Kieff, and Robert G. Kramer, “Are Sports Moves Next in IP Law?,” National Law Journal, May 20, 1996.] They also suggested that such sporting moves are like choreographic steps and should have copyright protection.
Following the ECJ decision concerning smell marks [Sieckmann v Deutsches Patent- und Markenamt (C273/00) [2003] Ch 487; [2003] 3 WLR 424; [2003], ETMR 37; [2003] RPC 38.], it remains to be seen how the law will develop insofar as registration of other non-traditional marks is concerned. The registration of moving human images as trade marks and sporting rituals is a relatively untested area.